`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`APPLE INC. & MICROSOFT CORPORATION
`Petitioners
`
`v.
`
`Neodron, Ltd.
`Patent Owner
`____________
`
`
`Case No. IPR2020-01000
`U.S. Patent No. 8,749,251
`____________
`
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW
`OF U.S. PATENT NO. 8,749,251
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`INTRODUCTION .......................................................................................... 1
`I.
`II. SUMMARY OF THE ’251 PATENT ........................................................... 2
`A. DESCRIPTION OF THE ALLEGED INVENTION OF THE ’251 PATENT ..................... 2
`B. PROSECUTION HISTORY ................................................................................... 4
`C. EFFECTIVE FILING DATE OF THE CHALLENGED CLAIMS ................................... 9
`D. LEVEL OF SKILL OF A PERSON HAVING ORDINARY SKILL IN THE ART .............. 17
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104 .......................................................................................................... 17
`A. GROUNDS FOR STANDING UNDER 37 C.F.R. § 42.104(A) ............................... 17
`B. IDENTIFICATION OF CHALLENGE UNDER 37 C.F.R. § 42.104(B) AND RELIEF
`REQUESTED ................................................................................................... 23
`C. CLAIM CONSTRUCTION UNDER 37 C.F.R. § 42.104(B)(3) .............................. 24
`IV. CLAIMS 1-20 OF THE ’251 PATENT ARE UNPATENTABLE ........... 25
`A. GROUND 1: THE ’068 PUBLICATION IN VIEW OF QT60161 RENDERS OBVIOUS
`CLAIMS 1-20 .................................................................................................. 25
`V. CONCLUSION ............................................................................................. 43
`VI. MANDATORY NOTICES UNDER 37 C.F.R. § 42.8(A)(1) ..................... 44
`A. REAL PARTY-IN-INTEREST ............................................................................ 44
`B. RELATED MATTERS ....................................................................................... 44
`C. LEAD AND BACK-UP COUNSEL ..................................................................... 44
`
`
`
`i
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`
`
`I.
`
`INTRODUCTION
`Petitioners Apple Inc. and Microsoft Corporation (“Petitioners”) request an
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`Inter Partes Review (“IPR”) of claims 1-20 (the “Challenged Claims”) of U.S.
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`Patent No. 8,749,251 (“the ’251 Patent”). This petition is being filed concurrently
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`with a second IPR petition (IPR2020-00998). The instant petition establishes that
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`the Challenged Claims recite new matter introduced on May 26, 2011 and are
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`therefore not entitled to any earlier claim of priority, while IPR2020-00998
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`challenges the claims based on prior art that predates the earliest filing date on the
`
`face of the’251 Patent.
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`Additionally, Petitioners have concurrently filed Paper 4 to aid the Board in
`
`determining that two petitions are necessary here. As detailed in that filing, the
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`Patent Trial and Appeal Board’s Consolidated Trial Practice Guide expressly
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`acknowledges situations at which it is appropriate to file multiple petitions against
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`the same patent, including, as in the case here, “when there is a dispute about priority
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`date requiring arguments under multiple prior art references.” Paper 4 at 2.
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`Moreover, as further explained in Paper 4 and as discussed below, this Petition
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`presents non-cumulative grounds with new art directed at addressing the new matter
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`introduced during prosecution—new matter which severed the priority chain prior
`
`to May 26, 2011. Accordingly, Petitioners respectfully request institution of all
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`grounds of invalidity asserted against the ’251 Patent.
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`
`
`1
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`
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`IPR2020-01000
`U.S. Patent No. 8,749,251
`
`II.
`
`SUMMARY OF THE ’251 PATENT
`A. Description of the alleged invention of the ’251 Patent
`The ’251 Patent generally relates to managing power consumption related to
`
`touch-sensitive inputs. ’251 Patent (Ex. 1001), 1:37-41, 4:7-8. Specifically, the
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`alleged invention is directed to touch-sensitive sensors that detect a user’s touch or
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`close proximity based on changes in capacitance generated by the user’s finger or
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`other nearby objects. Id. at 4:24-34. In accordance with the power-saving goals of
`
`the ’251 Patent, a “control circuit of the sensor can determine whether an object or
`
`a user’s finger is no longer in proximity with the sensor and based on a
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`predetermined time duration, the control circuit can produce an output signal
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`automatically to prevent the capacitance measurement circuit from continually
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`measuring changes in capacitance due to, for example, the perceived presence of an
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`object in proximity with the sensor.” Id. at 4:47-54. The control circuit can further
`
`implement an “auto-off” functionality or other power saving procedures “where an
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`apparatus has inadvertently been left on or with the erroneous perception that a user
`
`is still present.” Id. at 4:55-58. Figure 1 illustrates one exemplary arrangement of a
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`“sense electrode” connected to a programmable controller that is able to implement
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`these functions:
`
`
`
`2
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`
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`IPR2020-01000
`U.S. Patent No. 8,749,251
`
`The ’251 Patent explains that its features target devices in which a capacitive
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`touch sensor is used as an on/off switch such that a “touch” indicates when the device
`
`was last powered on or used:
`
`
`
`[T]he control circuit may be programmed by a user so that it may
`power down an apparatus based on a user-selected time duration;
`the control circuit output signals may be overridden, for example, to
`extend time durations before an apparatus is turned-off or to
`immediately turn-off an apparatus when a user is no longer present.
`
`The sensor of particular embodiments may be useful in various
`applications, for example in kitchen appliances, light switches,
`headsets, and other electronic consumer devices. For example, a coffee
`machine incorporating a sensor of particular embodiments may be
`programmed to power-down after a time period of, say, 30 minutes,
`where the coffee machine has been left on inadvertently.
`
`Id. at 5:5-17 (emphasis added).
`
`
`
`3
`
`
`
`B.
`Prosecution history
`The Application that resulted in the ’251 Patent was filed on May 26, 2011 as
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`IPR2020-01000
`U.S. Patent No. 8,749,251
`
`U.S. App. No. 13/116,764 (“the ’764 Application”). The ’764 Application claims
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`priority to U.S. App. No. 12/179,769 (“the ’769 Parent Application”) filed on July
`
`25, 2008 (now U.S. Pat. No. 7,952,366 (“the ’366 Parent Patent”)), which claims
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`priority to a provisional application filed on July 26, 2007 (“Provisional
`
`Application”). ’251 Patent (Ex. 1001). As set forth below, the claims submitted with
`
`the ’769 Parent Application—each reciting “a sensor for determining the presence
`
`of an object”—were rejected as anticipated or obvious in light of the applicant’s own
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`prior art patent publication directed to a headset-mounted capacitive switch used to
`
`support initiating a function after a predetermined time duration has exhausted since
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`the last proximity to the switch. In response, the applicant effectively forfeited
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`significant functional claim scope, limiting the ’366 Parent Patent claims to a very
`
`specific process by which the time duration is determined.
`
`Seeking to recapture the functional claim scope forfeited to obtain the ’366
`
`Parent Patent while distinguishing its own headset prior art, applicant introduced
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`new matter with the ’764 Application in 2011. Namely, applicant limited the claims
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`to a “sensing element of a touch screen,” which triggers a time duration from a “key
`
`touch on the touch screen.” This did indeed distinguish the newly proposed claims
`
`from applicant’s own headset prior art—the claims faced no prior art-based
`
`
`
`4
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`
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`IPR2020-01000
`U.S. Patent No. 8,749,251
`rejections. But, because there is no support for touch screens in the pre-2011 intrinsic
`
`record, the Challenged Claims include “new matter” and are not entitled to claim
`
`priority to any pre-2011 applications.
`
` ’366 Parent Patent Prosecution
`
`During the ’366 Parent Patent’s prosecution, the Applicants presented a set of
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`claims directed to many of the same features and functionalities addressed by the
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`Challenged Claims, including, as shown below, triggering functions (e.g., a power
`
`off function) a predetermined time period after the last proximity/touch:
`
`’251 Patent Claims 1 and 6
`
`1. An apparatus comprising:
`
`
` a
`
` sensing element of a touch screen;
`and
`
`one or more computer-readable non-
`transitory storage media coupled to the
`sensing element and embodying logic
`that is operable when executed to:
`
`determine an amount of time that has
`elapsed since the sensing element last
`detected a change of capacitance
`indicative of a key touch on the touch
`screen; and
`
`if the amount of time that has elapsed
`exceeds a predetermined time duration,
`then initiate a particular function
`of the apparatus.
`
`
`’769 Parent Application Original
`Proposed Claims 1 and 14
`1. A sensor for determining the presence
`of an object comprising:
`
` capacitance measurement circuit
`operable to measure the capacitance
`of the sensing element; and
`
` a
`
` control circuit operable to determine
`whether an object is in proximity with
`the sensor based on a measurement of
`the capacitance of the sensing element,
`
`further being
`the control circuit
`operable to provide an output signal
`to control a function of an apparatus
`when it is determined that an object
`has not been in proximity with the
`sensor for a predetermined time
`duration.
`
` sensing element;
`
` a
`
` a
`
`
`
`5
`
`
`
`14. The sensor of claim l, wherein the
`function of an apparatus controlled by
`is a switch-off
`the output signal
`function.
`
`IPR2020-01000
`U.S. Patent No. 8,749,251
`6. The apparatus of claim 1, wherein the
`particular function comprises turning
`off the apparatus.
`
`’366 Parent Patent File History (Ex. 1022), 44-47; ’251 Patent (Ex. 1001), Claims.
`
`As is evident in the above comparison, the key substantive differentiator
`
`between the claims proposed in the ’366 Parent Patent’s prosecution and those in the
`
`’251 Patent is the type of sensor to which they are directed. Unlike the ’251 Patent
`
`claims, which recite detecting key touches on touch screens, the claims proposed
`
`during the ’366 Parent Patent’s prosecution were merely directed to capacitive
`
`sensors for detecting proximity. This is consistent with the pre-2011 intrinsic
`
`record’s exclusive disclosure of devices in which a capacitive touch sensor is used
`
`as an on/off switch such that a “touch” indicates when the device was last powered
`
`on or used:
`
`[T]he control circuit may be programmed by a user so that it may
`power down an apparatus based on a user-selected time duration;
`the control circuit output signals may be overridden, for example, to
`extend time durations before an apparatus is turned-off or to
`immediately turn-off an apparatus when a user is no longer present.
`
`The sensor of particular embodiments may be useful in various
`applications, for example in kitchen appliances, light switches,
`headsets, and other electronic consumer devices. For example, a coffee
`machine incorporating a sensor of particular embodiments may be
`
`
`
`6
`
`
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`IPR2020-01000
`U.S. Patent No. 8,749,251
`programmed to power-down after a time period of, say, 30 minutes,
`where the coffee machine has been left on inadvertently.
`
`Id. at 5:5-17 (emphasis added); see also Provisional Application (Ex. 1021), 8
`
`(noting the touch sensor is directed to a single “touch on/touch off” key that includes
`
`a “programmable auto switch-off”).
`
`The examiner issued a first office action, finding all proposed claims (except
`
`dependent claims 4 and 7) anticipated or obvious in view of applicant’s own patent
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`publication, U.S. 2007/0076897 (“the ’897 Publication”). Id. at 246-51. The ’897
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`Publication, entitled “Headsets and Headset Power Management,” describes a
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`capacitive sensor in a headset such that a control circuit can power down certain
`
`functions a predetermined time after it detects the user has removed the headset.
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`’897 Publication (Ex. 1023), [0010], [0011], [0095] (describing power down states
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`every 30 seconds after detecting the lack of contact until device is “fully power[ed]
`
`down.”). Because the ’897 Publication used the same capacitive on/off sensors
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`disclosed in the pre-2011 intrinsic record (Expert Decl. (Ex. 1003), ¶35) and the
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`specification expressly disclosed headset-mounted capacitive sensors embodiment
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`(’251 Patent (Ex. 1001), 5:1-13), applicant was unable to distinguish the proposed
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`claims based on the type of sensor or a specific application. Instead, the applicant
`
`limited its claims to require the limitations recited in claims 4 and 7 (each reciting a
`
`
`
`7
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`
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`IPR2020-01000
`U.S. Patent No. 8,749,251
`specific manner of determining the time duration), and a notice of allowance
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`followed. ’366 Parent Patent File History (Ex. 1022), 280-85, 291-96.
`
` ’251 Patent Prosecution
`In an attempt to recapture the subject matter given up in the ’366 Parent
`
`Patent’s prosecution (e.g., triggering a function after a time duration has elapsed
`
`since the user last touched the sensor, auto-off functionality, etc.), the applicant filed
`
`a continuation application with a set of proposed claims directed to detecting a “key”
`
`on a “touch screen,” distinguishing applicant’s own headset prior art. ’251 Patent
`
`File History (Ex. 1002), 38-40. With the introduction of new matter in the form of
`
`limitations directed to “touch screens,” applicant successfully avoided its own
`
`headset prior art. Indeed, the Challenged Claims were not subject to any prior art-
`
`based rejections. A Notice of Allowability issued on January 31, 2014 and noted that
`
`no prior art of record taught the limitations directed to initiating a function (e.g., a
`
`power save function) after a determined about of time has elapsed since the sensing
`
`element last detected a change of capacitance indicative of a “key touch on the touch
`
`screen.” Id. at 244-251. Because there is no support for touch screens in the pre-2011
`
`intrinsic record, however, these new limitations that distinguished the prior art also
`
`severed applicant’s pre-2011 priority claim.
`
`
`
`8
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`
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`IPR2020-01000
`U.S. Patent No. 8,749,251
`C.
`Effective filing date of the Challenged Claims
`The Challenged Claims are not entitled to any priority date before the May
`
`26, 2011 continuation application in which “touch screen” and “key touch on a touch
`
`screen” were introduced for the first time.
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`“It is elementary patent law that a patent application is entitled to the benefit
`
`of the filing date of an earlier filed application only if the disclosure of the earlier
`
`application provides support for the claims of the later application, as required by 35
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`U.S.C. § 112.” In re Chu, 66 F.3d 292, 297 (Fed. Cir. 1995). When a priority claim
`
`involves a chain of priority documents, “each application in the chain leading back
`
`to the earlier application must comply with the written description requirement of
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`35 U.S.C. § 112.” Lockwood v Am. Airlines, Inc., 107 F.3d 1565, 1571 (Fed. Cir.
`
`1997). To satisfy the written description requirement of 35 U.S.C. § 112, the
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`disclosure of the earlier filed application must “convey with reasonable clarity to
`
`those skilled in the art that, as of the filing date sought, [the inventor] was in
`
`possession of the invention.” Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563–64
`
`(Fed. Cir. 1991) (emphasis in original). A prior application that merely renders the
`
`later-claimed invention obvious is not sufficient to meet the written description
`
`requirement—it must describe the claimed invention with all its limitations. Tronzo
`
`v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998). Similarly, “[i]t is not sufficient
`
`for purposes of the written description requirement of § 112 that the disclosure, when
`
`
`
`9
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`IPR2020-01000
`U.S. Patent No. 8,749,251
`combined with the knowledge in the art, would lead one to speculate as to
`
`modifications that the inventor might have envisioned, but failed to disclose.”
`
`Lockwood, 107 F.3d 1572.
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`Here, each Challenged Claim recites a “touch screen” and detecting a “key
`
`touch on a/the touch screen.” The ’251 Patent, however, does not describe or
`
`differentiate between a “key touch” and any other touch input. In fact, the ’251
`
`Patent does not use the phrase “key touch on a touch screen” or the term “touch
`
`screen” outside the claims and abstract. This language was newly introduced in the
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`May 26, 2011 continuation application. ’251 File History (Ex. 1002), 38-41 (adding
`
`references to “touch screen” in the claims and abstract). Prior to this addition in
`
`2011, the entire intrinsic record related exclusively to discrete capacitive
`
`sensors/switches that were “arranged to provide an ‘on’ output signal when a finger
`
`is adjacent to a sensor and an ‘off’ output signal when a finger is not adjacent to a
`
`sensor.” ’251 Patent (Ex. 1001), 1:29-33. Because “touch screen” has a specific and
`
`well-accepted meaning in the art that is distinct from the discrete sensors/switches
`
`described in the intrinsic record prior to the 2011 continuation application, “touch
`
`screen” and “key touch on a/the touch screen” find no pre-2011 support.
`
`
`
`10
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`
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`IPR2020-01000
`U.S. Patent No. 8,749,251
`The well-accepted meaning of “touch screen” is a transparent
`touch-sensitive panel that overlays a display (e.g., an LCD display)
`Touch screen technology has a well-accepted meaning in the art, which differs
`
`
`
`materially from the on/off capacitive switches previously described in the intrinsic
`
`record. Givargis Decl. (Ex. 1003), ¶¶26-28. Namely, touch screens are transparent
`
`touch-sensitive panels that overlay a display (e.g., an LCD display). Id. This
`
`meaning is confirmed by a wealth of extrinsic evidence. For example, Microsoft’s
`
`Computer Dictionary confirms a touch screen necessarily includes a display along
`
`with the touch-sensitive panel. Microsoft Computer Dictionary 4th Ed. (Ex. 1005),
`
`3-4 (noting a touch screen is a “computer screen designed or modified to recognize
`
`the location of a touch on its surface” and analogizing phrase to a “touch-sensitive
`
`display”). Similarly, Barron’s Dictionary of Computer and Internet Terms defines a
`
`“touchscreen” as “a computer screen that is sensitive to touch, so that the user can
`
`point to things on it by touching the screen itself, without using a mouse.” Barron’s
`
`Computer Dictionary (Ex. 1006), 4. A more detailed discussion is provided in a 2009
`
`Planet Analog article, titled “Touchscreens 101: Understanding touchscreen
`
`technology and design.” Touchscreens 101 (Ex. 1007). The article describes “six
`
`key elements” to every touchscreen, including a “touchscreen ‘sensor’ [that] is a
`
`clear glass panel with a touch-responsive surface” and an LCD display mounted
`
`below the sensor. Id. at 2.
`
`
`
`11
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`IPR2020-01000
`U.S. Patent No. 8,749,251
`Patent Owner’s own patent portfolio similarly confirms this well-accepted
`
`meaning of “touch screen.” For example, U.S. Patent No. 8,599,150 (“the ’150
`
`Patent”), which, like the ’251 Patent lists Harald Philipp as an inventor, teaches that
`
`“[a] touchscreen includes touchscreen electrode elements distributed across an
`
`active area of a substrate, and the touchscreen overlays a display.” ’150 Patent (Ex.
`
`1008), Abstract. The ’150 Patent explains the benefits realized by deploying a touch-
`
`sensitive device as a touchscreen:
`
`Touchscreens are often used as interfaces on small electronic devices,
`appliances, and other such electronic systems because the display
`behind the touchscreen can be easily adapted to provide instruction
`to the user and to receive various types of input, thereby providing
`an intuitive interface that requires very little user training to use
`effectively.
`Id. at 2:27-32 (emphasis added). U.S. Patent No. 9,632,628 (“the ’628 Patent”),
`
`which also lists Harald Philipp as an inventor, notes that “[t]ouchscreen displays are
`
`able to detect a touch such as by a finger or stylus” and that the “[u]se of a
`
`touchscreen as part of a display enables a user to interact with an electronic
`
`application by touching the touchscreen.” ’628 Patent (Ex. 1009), 1:6-9. Finally,
`
`U.S. Patent No. 9,823,784 (“the ’784 Patent”), which also lists Harald Philipp as an
`
`inventor, unambiguously explains, “[i]t will be understood that the display panel in
`
`combination with the touch sensor make a touch screen.” ’784 Patent (Ex. 1010),
`
`10:35-37.
`
`
`
`12
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`
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`IPR2020-01000
`U.S. Patent No. 8,749,251
`Further, a PHOSITA would have understood that a “key touch on a/the touch
`
`screen,” pursuant to the well-accepted meaning of “touch screen” in the art describes
`
`a specific region on the touchscreen available to select by touching that region.
`
`Givargis Decl. (Ex. 1003), ¶¶29-31. Indeed, the ’628 Patent describes examples of
`
`such keys on a touchscreen:
`
`Touch sensitive devices such as touchscreen displays may be used in a
`variety of applications, from automatic teller machines (ATM
`machines), home appliances, personal digital assistants and cell phones,
`and other such devices. One example cellular telephone and PDA
`device is illustrated in FIG. 16. A cellular telephone device 1601
`includes a touch- screen display 1602 comprising a significant portion
`of the largest surface of the device. The large size of the touchscreen
`enables the touchscreen to present a wide variety of data, including
`a keyboard, a numeric keypad, program or application icons, and
`various other interfaces as desired. The user may interact with the
`device by touching with a single finger, such as to select a program
`for execution or to type a letter on a keyboard displayed on the
`touchscreen display assembly 1602, or may use multiple touches such
`as to zoom in or zoom out when viewing a document or image. In other
`devices, such as home appliances, the display may not change or may
`change only slightly during device operation, and may recognize only
`single touches.
`
`
`
`13
`
`
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`IPR2020-01000
`U.S. Patent No. 8,749,251
`’628 Patent (Ex. 1009), 8:62-9:13 (emphasis added); see also Givargis Decl. (Ex.
`
`1003), ¶¶29-31 (discussing the same and concluding that users selecting keys on a
`
`touchscreen was well-understood in the art).
`
`Accordingly, based on the the well-accepted meaning of the claimed “touch
`
`screen” and of “key touch on a/the touch screen,” the Challenged Claims require
`
`touching a specific region on a transparent touch-sensitive panel that overlays a
`
`display (e.g., an LCD display).
`
`
`
`The pre-2011 intrinsic record does not teach or suggest touch
`screens or key touches on touch screens
`Aside from the “touch screen” references added to the Abstract and claims in
`
`2011, the ’251 Patent does not describe or suggest touch screens. Specifically,
`
`neither U.S. Pat. App. No. 12/179,769 (published as U.S. Patent Publication No.
`
`2009/0027068 to Philipp, et al. (“the ’068 Publication”) (Ex. 1024)) nor U.S. Prov.
`
`App. No. 60/952,053 (Ex. 1021) (collectively, “the pre-2011 intrinsic record”)
`
`discloses touch screens or key touches on touch screens. Instead, the pre-2011
`
`intrinsic record discloses only discrete capacitive sensors/switches that “are arranged
`
`to provide an ‘on’ output signal when a finger is adjacent to a sensor and an ‘off’
`
`output signal when a finger is not adjacent to a sensor.” ’251 Patent (Ex. 1001),
`
`
`
`14
`
`
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`IPR2020-01000
`U.S. Patent No. 8,749,251
`1:29-33.1 Examples provided include basic on/off switches that would replace
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`simple mechanical switches. Id. at 15:64-67 (noting the invention “may be
`
`implemented in human interfaces, like control panels, appliances, toys, lighting
`
`controls, or anywhere a mechanical switch or button may be found”); see also id. at
`
`17:8-12 (listing “example applications,” including “[p]ower switch replacement in
`
`countertop appliances, irons, battery powered toys, heaters, lighting controls,
`
`automotive interior lighting, commercial and industrial equipment such as soldering
`
`stations and cooking equipment”). The ’251 Patent does disclose that its power
`
`saving features “may be used in apparatus or devices with one touch key . . . [or]
`
`more than one key.” Id. at 17:13-17. A PHOSITA would have understood that any
`
`multi-key embodiment would be consistent with the remainder of the disclosure—
`
`merely more than one basic on/off capacitive sensor/switch. Givargis Decl. (Ex.
`
`1003), ¶30 (explaining that the ’251 Patent does not teach or suggest keys/regions
`
`on a touch screen as those terms are understood in the art, but rather teaches only
`
`one or more basic on/off capacitive switches). Indeed, there is no disclosure that
`
`
`1 To streamline review, Petitioners have cited to the ’251 Patent. With the exception
`
`of the abstract and claims, the ’251 Patent disclosures are identical to the ‘068
`
`Publication, and, accordingly, reflect the subject matter disclosed in the earlier
`
`application and publication.
`
`
`
`15
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`
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`IPR2020-01000
`U.S. Patent No. 8,749,251
`teaches or suggests a touch screen, i.e., a transparent touch-sensitive panel that
`
`overlays a display (e.g., an LCD display), or detecting touches within a specific
`
`region on a touch screen. Id.2
`
`
`2 To this point, the ’251 Patent refers to (but does not expressly incorporate by
`
`reference) U.S. Pat. Nos. 5,730,165, 6,466,036, and 6,452,514, all commonly
`
`invented by Philipp, to describe the “fundamental principles underlying [] capacitive
`
`sensors.” ’251 Patent (Ex. 1001), 4:43-46. Notably, none of these patents teach or
`
`suggest any form of “touch screen” or “key touch on a touchscreen.” Givargis Decl.
`
`(Ex. 1003), ¶¶ 52. The specification also states that it is incorporating by reference
`
`“Application Note AN-KD02,” but notes the document is “not necessarily relevant
`
`to particular embodiments.” ’251 Patent (Ex. 1001), 7:65-8:5. It is not possible to
`
`ascertain the content of this document, however. No version of the Application Note
`
`is specified and no copy was made of record during prosecution. Regardless, the
`
`Application Note a patent or patent application, so any essential matter in that
`
`document cannot be incorporated by reference. 37 C.F.R. 1.57(d) (noting “essential
`
`material . . . necessary to . . . [p]rovide a written description of the claimed invention”
`
`“may be incorporated by reference . . . only by way of an incorporation by reference
`
`to a U.S. patent or U.S patent application publication”) (emphasis added).
`
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`16
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`IPR2020-01000
`U.S. Patent No. 8,749,251
`Because the Challenged Claims’ “touch screen” and “key touch on a/the touch
`
`screen” limitations find no support in the pre-2011 intrinsic record, they are not
`
`entitled a pre-2011 priority date.
`
`D.
`Level of skill of a person having ordinary skill in the art
`A person having ordinary skill in the art (PHOSITA) at the time of the ’251
`
`Patent would have been a person having at least a bachelor’s degree in electrical
`
`engineering, computer engineering, computer science, or a related field, and at least
`
`two years of experience in the research, design, development, and/or testing of
`
`human-machine interfaces such as touch sensors and the firmware or system
`
`software that govern said interfaces, or the equivalent, with additional education
`
`substituting for experience and vice versa. Givargis Decl. (Ex. 1003), ¶¶20-22.
`
`III. REQUIREMENTS FOR INTER PARTES REVIEW UNDER 37 C.F.R.
`§ 42.104
`A. Grounds for standing under 37 C.F.R. § 42.104(a)
`Petitioners certify that the ’251 Patent is available for IPR and that the
`
`Petitioners are not barred or estopped from requesting IPR challenging the claims of
`
`the ’251 Patent. Specifically, (1) Petitioners are not the owners of the ’251 Patent,
`
`(2) Petitioners have not filed a civil action challenging the validity of any claim of
`
`the ’251 Patent, and (3) this Petition is filed less than one year after Petitioners were
`
`served with complaints alleging infringement of the ’251 Patent.
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`17
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`IPR2020-01000
`U.S. Patent No. 8,749,251
`
`B. Discretion under 35 U.S.C. § 314(a)
`a. The Fintiv factors favor institution
`Under recent precedent, the Board may consider parallel litigation, including
`
`an early trial date, as part of its discretionary power to institute under 35 U.S.C. §
`
`314(a). NHK Spring Co., Ltd. v. Intri-Plex Technologies, Inc., IPR2018-00752,
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`Paper 8 at 19–20 (PTAB Sept. 12, 2018) (precedential); see also Apple Inc. v. Fintiv,
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`Inc., IPR2020-00019, Paper 11 at 2-3, 6 (PTAB March 20, 2020) (enumerating six
`
`factors that “relate to whether efficiency, fairness, and the merits support the exercise
`
`of authority to deny institution in view of an earlier trial date in [a] parallel
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`proceeding”) (precedential)3. Although a parallel ITC investigation is underway, the
`
`facts here weigh against a discretionary denial.
`
`
`3 Petitioners note that Fintiv’s and NHK’s focus on the trial date is misplaced as a
`
`basis for the Board’s exercise of its discretion under 314(a). Exalting a trial date as
`
`the benchmark over the statutory filing window undermines Congressional intent to
`
`allot petitioner’s a one-year window to file a petition from service of a complaint;
`
`undermines the AIA’s and USPTO’s objectives of improving patent quality; ignores
`
`the abolition of unjust infringement verdicts rendered on invalid patents; ignores the
`
`practical realities of shifting litigation dockets; ignores the vast resources saved from
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`18
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`IPR2020-01000
`U.S. Patent No. 8,749,251
` Whether the court granted a stay or evidence exists that one may
`be granted if a proceeding is instituted.
`Litigation in the Western District of Texas has been stayed pending finality of
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`any determination in the ongoing ITC investigation. Ex. 1004. While it is unlikely
`
`the ITC investigation will be stayed, as explained below, the efficiency and integrity
`
`of the system are best served by instituting review.
`
`
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`Proximity of the court’s trial date to the Board’s projected statutory
`deadline for a final written decision.
`The ITC panel is currently scheduled to issue an initial determination on June
`
`18, 2021, and a Final Determination on October 20, 2021. However, the stay in the
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`parallel district court proceedings is not set to be lifted until the ITC determination
`
`becomes final. An ITC determination is appealable only after expiration of the
`
`presidential review period—60 days after the Final Determination. 19 U.S.C. §
`
`1137(c); id. at (j)(4). Thus, any ITC determination becomes appealable no later than
`
`December 20, 2021. Comparatively, the Board’s projected statutory deadline for its
`
`final written decision would fall at the end of November 2021, approximately a
`
`month before any ITC determination could be deemed appealable.
`
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`unnecessary post-trial activity; and permits district courts and patent owners to
`
`manipulate the availability of IPRs.
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`19
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`IPR2020-01000
`U.S. Patent No. 8,749,251
`Even if the Board’s Final Written Decision were to issue after an ITC
`
`determination is final, the ITC investigation would not “render [the IPR] proceeding
`
`duplicative or amount to a waste of the Board’s resources” because “the ITC does
`
`not have the authority to invalidate a patent in a way that is applicable to other
`
`forums” and the district court will still need to address patentability once stays are
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`lifted. Nichia Corp. v. Lighting Science Group Corp., IPR2019-01259, Paper 21,
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`*27-28 (PTAB Jan. 15, 2020). In Nichia Corp., the Board declined to deny
`
`institution even though the ITC proceeding might conclude before a final written
`
`decision, explaining that the stayed, ongoing district court proceedings would benefit
`
`from a patentability determination from the PTAB when its stays are lifted. Id. These
`
`same concerns are at issue here.
`
`This factor weighs in favor of institution.
`
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`Investment in the parallel proceeding by the court and the parties.
`The parallel district court proceedings were stayed only a month and half after
`
`service of the complaint with absolutely no substantive efforts invested by the court.
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`Similarly, the ITC panel has yet to hold any Markman hearing (currently scheduled
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`on September 14-15, 2020). Fact discovery has just opened, set to conclude on
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`October 23, 2020, and expert reports will not be exchanged for
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